Product Protection and the Law NEWS Final Office Action Rejections for Applications: It Ain’t Over Until the Fat Lady Sings…Usually John W. Boger, Esq. Heslin Rothenberg Farley & Mesiti P.C.

The patent process can be a long and, at times, tedious process. specification, claims or drawings, new arguments or new evidence Many inventors assume that once you file your application for supporting ), the examiner will withdraw the with the United States Patent and Office (USPTO), finality of the Office Action and the submission will be entered the hard work is done. Unfortunately, for most cases, the and considered by the examiner. Essentially, the RCE allows hard work has just begun. It is highly unusual for a patent the to file a second application to keep the prosecution application to not be rejected and receive at least one Office of the first application alive. The RCE application stays with Action from the . Typically, inventors will the same examiner that was reviewing the first application receive multiple Office Actions in which their invention is and keeps the same application serial number. Filing an RCE is rejected for any number of reasons, including lack of , capitalism at its best: pay more money and file a submission to obviousness and ineligible subject matter. When an inventor buy another full examination of your application. However, a receives a Final Office Action, he has now come to a critical potential downside to filing an RCE is, since the application is crossroads in the prosecution highway. The inventor may staying with the same examiner, that examiner may just repeat choose from three options: (1) abandon the application, (2) file the same basis for his rejections without considering the newly a Request for Continued Examination and pay a fee or (3) file filed arguments. a Notice of Appeal. The third option when an inventor receives a Final Office Action is the most expensive and time-consuming. This is to file an appeal with the Board of Patent Appeals and Interferences When an inventor receives a Final Office Action, (BPAI). The BPAI is divided into an Appeals division and he may 1) abandon the application, 2) file a a Trial division. The Appeals division handles appeals of Request for Continued Examination and pay a examiner rejections with a group of 69 administrative patent fee or 3) file a Notice of Appeal. judges who are divided into various technology areas. The board that actually hears the appeal usually comprises a three- judge panel. The administrative patent judges are typically Abandonment means exactly that. The inventor will former patent examiners with the USPTO. either not file a response within the required time period, or For a claim to be eligible to be appealed, it has to have been will file a response with the USPTO stating that the application “twice rejected” in a . This “twice rejected” is being abandoned. Some patent practitioners actually use pre-requisite does not have to occur in the same application. For the abandonment route as a tactical tool. For instance, an instance, the first rejection may occur with a parent application application has been rejected numerous times for dubious and then that same claim appears in a continuation application reasons and the communication between the examiner and and may be rejected again. The inventor can then choose to patent practitioner appears to have reached a dead-end. The appeal the rejection in the continuation application. patent practitioner may file a continuation application with The appeals process for an inventor starts with the filing the USPTO and then abandon the parent application for of a Notice of Appeal after the subject claims have met the which there is the outstanding Final Office Action. The patent “twice rejected” threshold. The notice must be filed within practitioner typically uses this strategy in an attempt to get a the time allowed for filing a response from the examiner’s last different examiner assigned to the review of the now newly- Office Action. In other words, to be timely, the notice has to be filed continuation application. Of course, if the previous filed while the application is still pending. This time period is examiner gets assigned to the continuation application, then typically three months, with additional one month extensions this strategy has failed. allowed with the payment of extension fees, up to a grand total The second option for the inventor is to file what is called a of six months from the mailing of the Final Office Action. The Request for Continued Examination or RCE. If an inventor files inventor must, in addition to filing the Notice of Appeal, also an RCE with the required fee and a submission (a submission pay either a small entity fee of $270 or a large entity fee of $540. may be an Information Disclosure Form, an amendment to the

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Within two months of filing the notice and paying the As you can now tell, filing an appeal can be very costly fee, the inventor must file his Appeal Brief with the BPAI. The as the fees to file and the amount of time to craft the Appeal USPTO has set out numerous requirements regarding content Brief can quickly add up. In an attempt to assist inventors and arrangement of the Appeal Brief. Non-compliance with with expediting the review of an application that is being these standards results in the brief being rejected and returned appealed, the USPTO instituted a pilot program in 2005 to the inventor for revision. The contents of the Brief must allowing an inventor to request a pre-appeal brief conference. include: (1) a statement of the real party of interest (used as This program remains in place today, and is quite useful if conflict check for the judges); (2) a statement of related cases the inventor feels that the application underwent a sub-par (any continuation applications must be identified); (3) a review by the examiner. In this program, the inventor requests statement of the source or basis of jurisdiction of the BPAI; a conference at the time of filing the Notice of Appeal. The (4) Table of Contents; (5) a statement of the status of any pending rejections are then reviewed by a panel of examiners. amendments filed after the final rejection; (6) grounds for the After the conference, the panel can reopen prosecution, allow rejections to be reviewed (This is the key section, as it identifies the claims, allow the application to go to appeal or reject the the specific determinations of the examiner to be reviewed by appeal request on procedural grounds. The pre-appeal brief the BPAI. Failure to specifically identify a rejection will result conference is a low-cost mechanism to obtain a further review in the waiver for appealing that rejection.); (7) statement of of the claims by someone skilled in the art other than the facts; (8) argument (Each ground of rejection to be reviewed examiner, without having the expense of preparing an Appeal must be addressed.); (9) claims section (all claims and their Brief. status must be listed); (10) claims support and drawings Once the Appeal Brief is found to meet the technical support listing; (11) if present, means plus function or step plus requirements of the rules, a mandatory appeal conference is function analysis; (12) evidence section, if necessary and (13) held between the examiner, the examiner’s supervisor and related cases, if necessary. The Appeal Brief must not exceed 30 another examiner with expertise in the art to discuss the double-spaced pages, using 14-point font. As with everything inventor’s brief and decide whether to continue the appeal, with the USPTO, a fee is charged for filing an Appeal Brief: allow the claims or reopen prosecution. If it is decided that $540 for a large entity and $270 for a small entity. the appeal should continue, the examiner is then charged

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with writing his or her answer. In the Examiner’s Answer, the the BPAI. If the decision remands the application back to the examiner is prohibited from raising new grounds for rejection examiner, the prosecution is reopened, but only with regards and must address each of the arguments presented by the to any new grounds for rejection. Numerous prosecution inventor in the brief. strategies may then be considered, including amending the Following receipt of the Examiner’s Answer, the inventor claims and filing an RCE. Any request to reopen prosecution is allowed to file a Reply Brief, refuting the arguments raised in must occur within two months of the BPAI’s decision. the Examiner’s Answer. The reply must be filed within two months from the date of the Examiner’s Answer. Incredibly, there are no fees required for filing a Reply Brief. What happens if the decision is not favorable The inventor has the option to request an oral hearing, to your position? Options include amending the but this should only be done if the circumstances would deem it “necessary or desirable for a proper presentation of the claims to overcome the decision, or filing a appeal.” The written request must occur within two months single request for a rehearing on the new of the date of the Examiner’s Answer and be accompanied grounds of rejection. by yet another fee, which is $1,080 for a large entity and $540 for a small entity. The time allotted for arguments are 20 minutes for the inventor and 15 minutes for the Examiner. Finally, the inventor may also appeal the BPAI decision The participants may only rely on the arguments that have to the U.S. Courts of Appeals for the Federal Circuit (CAFC). been presented in their submitted papers, with no additional Any decision by the CAFC may also, on a discretionary basis, information or evidence being allowed to be introduced. be reviewed by the U.S. Supreme Court. Alternatively, the After the BPAI has considered the briefs, answers inventor may also decide to bring a civil action against the and oral arguments, if presented, it will write its decision. Commissioner of the USPTO in the U.S. District Court for the The decision may come in the form of an affirmation of the District of Columbia. Both of these options are very costly and examiner’s rejection, a reversal of the rejections or remand of lengthy endeavors. the application back to the examiner for further review and In conclusion, many options are at the disposal of an consideration. The BPAI’s decision is required to include inventor when he receives a Final Office Action. The inventor’s specific findings of fact and conclusions of law so to provide course of action will depend upon the budget, the quality of the inventor with the ability to appeal, if necessary. Professor the past examinations performed on the application and the Dennis Crouch recently published a study that reviewed relationship between the patent practitioner and the examiner. 10,000 ex parte decisions by the BPAI from November 2009 to It is important for the inventor to remember that receiving a June 2011. The majority of these decisions related to questions Final Office Action is not the end of the road, but rather just of obviousness and anticipation for the reviewed claims. Of one more twist in the journey to getting a patent issued. the cases examined, it was found that 52% fully affirmed the examiners’ rejections, 34% reversed and 14% affirmed-in-part. This article is for informational purposes only and should The study also confirmed that the BPAI’s backlog continues to not be interpreted as legal advice to the reader. grow and that for fiscal year 2011, the backlog has grown more than 25% with over 22,000 pending appeals now waiting for review.1 John W. Boger is a Partner with the Upstate New York based law firm So, what happens if the decision you receive is not of Heslin Rothenberg Farley & Mesiti P.C. and is the head of the firm’s favorable to your position? Several options remain available, Medical Products and Technology Practice Group. Before attending which include amending the claims to overcome the decision law school, Mr. Boger worked for eight years with a large orthopaedic by the BPAI or filing a single request for a rehearing on the device manufacturer in various engineering and marketing positions. new grounds of rejection. Such a request for rehearing must He can now be reached at 518-452-5600 or at [email protected]. come within two months of the BPAI’s original decision. The rehearing is limited to arguments in rebuttal to points that Heslin Rothenberg Farley & Mesiti P.C. the inventor believes have been misapplied or overlooked by www.hrfmlaw.com

1  Patently-O Blog, BPAI Judicial Diversity and Appeal Win Rate, Den- nis Crouch and Jason Rantanen, Posted June 17, 2011.

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